Patent Trial and Appeal BoardBoardside Chat: SOP2-related forms, Motion to Amend (MTA) pilot program preliminary results, and Multiple Petitions Study Update
William Saindon, Lead Administrative Patent Judge
Jessica Kaiser, Lead Administrative Patent Judge
Michelle Ankenbrand, Lead Administrative Patent Judge
December 10, 2020
Agenda
• SOP2-related forms– PTAB anonymous decision nomination form– POP request amicus form
• MTA pilot program preliminary results• Multiple Petitions Study Update
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Question/comment submission
• To send in questions or comments during the webinar, please email:– [email protected]
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SOP2-related forms
Standard operating procedure 2 (SOP2), revision 10 • Created a Precedential Opinion Panel (POP) to rehear matters of
exceptional importance involving policy or procedure in pending trials and appeals, resulting in binding agency authority unless otherwise designated;
• Procedure for nomination, review, and designation of Board decisions, other than POP decisions, as precedential or informative; and
• Procedure for de-designating precedential and informative decisions.
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PTAB anonymous decision nomination form
PTAB anonymous decision nomination form
• Published September 24, 2020.• Accessible on the PTAB’s Precedential and
informative decisions page of the USPTO website.
• Allows any member of the public to nominate any PTAB decision for precedential or informative designation.
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PTAB anonymous decision nomination form
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Access the PTAB anonymous decision nomination form
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Access the PTAB anonymous decision nomination form
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Precedential Opinion Panel (POP) request: amicus form
POP request: amicus form
• Published November 19, 2020.• Accessible the PTAB’s Precedential Opinion
Panel page of the USPTO website.• Allows the submission of an amicus
request addressing a pending request for POP review.
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POP request: amicus form
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POP request: amicus form vs. POP amicus brief
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POP request: amicus form
POP amicus brief
Timing Filed before decision whether to grant POP review
Filed after POP review is granted
Reason filed Can explainwhy POP review should be granted or denied
Can explain how the POP should decide the issue(s) presented
Access the POP request: amicus form
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Access the POP request: amicus form
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Question/comment submission
• To send in questions or comments during the webinar, please email:– [email protected]
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Motion to Amend (MTA) pilot program preliminary results
Highlights of MTA pilot program
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• New program provides patent owner (PO) with two options not previously available:
1. PO may choose to receive preliminary guidance (PG) from Board on its motion to amend (MTA).
2. PO may choose to file a revised MTA (rMTA) after receiving petitioner ’s opposition to initial MTA and/or after receiving Board’s PG (if requested).
• Pilot program applies to all AIA trials instituted on or after publication date of the notice (i.e., March 15, 2019)
404%
627%
34036%
50753%
949Trials
Completed trials with MTAPending trials with MTAPending trials without MTACompleted trials without MTA
MTA filings (Pilot: Mar. 15, 2019 to Sept. 30, 2020)
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In how many trials are MTAs filed?
Trials reflect institutions between March 15, 2019 and June 30, 2020. The outcomes of decisions on institution responsive to requests for rehearing are incorporated.
MTA subsequent developments (Pilot: Mar. 15, 2019 to Sept. 30, 2020)
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3177%
13%
820%
40Total
DecidedConsolidatedWithdrawn or Settled
Pilot options include requests for preliminary guidance (PG) and revised MTAs.Dispositions reflect MTAs substituting claims.
MTA dispositions, by option (Pilot: Mar. 15, 2019 to Sept. 30, 2020)
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Overall With Pilot Option No Pilot Option
2271%
413%
516%
3114
64%
418%
418%
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Denied Granted in Part Granted
889%
111%
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14%
29%
36%
11%
Pre-PilotOverall
PilotOverall
Pilotwith Option
PilotNo Option
MTA grant rates
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Pilot options include requests for preliminary guidance and revised MTAs.Grant rate calculated as the percent of MTA dispositions granted or granted in part.
Petitioner did meet burden
1973%
PO did not meet burden
312%
Denial of claim substitution, by party’s burden (Pilot: Mar. 15, 2019 to Sept. 30, 2020)
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This diagram reflects instances where Petitioner met its burden to show unpatentabilityor Patent Owner failed to meet its burden on the statutory and regulatory requirements.
Both4
15%
PatentOwner
312%
Reasons PO did not meet burden(Pilot: Mar. 15, 2019 to Sept. 30, 2020)
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Both4
16%
1
6
0
0
0
0
0
1
6
Claims Appendix Defects
Other
Unreasonable Number of Substitute Claims
Enlarge Scope of Claims
Nonresponsive to a Ground of Unpatentability
Substitutes for Unchallenged Claims
New Matter or No Written Description
Sole PO Reason One of Multiple PO Reasons
PatentOwner
312%
Reasons Petitioner did meet burden(Pilot: Mar. 15, 2019 to Sept. 30, 2020)
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Both4
16%
3
17
0
0
2
4
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Other
101
Enablement
Indefiniteness
102/103
Sole Pet. Reason One of Multiple Pet. Reasons
MTA pilot data(Mar. 15, 2019 to Sept. 30, 2020)
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24, 24%
78, 76%
Number of MTAs filed under pilot program
MTAs without PG Request
MTAs with PG Request
Patent owner filings after preliminary guidance(Mar. 15, 2019 to Sept. 30, 2020)
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12, 21%
44, 79%
PO filings after preliminary guidance
PO reply
RMTA
Note: rMTAs # include one IPR where PO filed a rMTA, but no PG.
Takeaways from MTA pilot program preliminary data
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• POs file MTAs in about the same percentage of instituted trials.
• POs have elected one or both pilot options in the vast majority of trials.
• POs choosing at least one pilot option are more likely to have MTAs granted for at least one proposed substitute claim.
Question/comment submission
• To send in questions or comments during the webinar, please email:– [email protected]
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Multiple Petitions Study
Multiple petitions
• How “successful” are multiple petition strategies for petitioners?
• “Challenge”: one petitioner vs. one patent
• Serial petitions– Same petitioner vs. same patent, filed > 90 days apart
• Parallel petitions– Same petitioner vs. same patent, filed <= 90 days apart
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Serial petition: petitioner’s resultFiled > 90 days apart
1st Petition Serial Petition
Success
Success
Failure
Failure
+
+
+
+
=
=
=
=
Reported Result of Attempt
Inst
Deny
Inst
Inst
Inst
Deny
Deny
Deny
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Serial petitions
• General Plastic designated FY17• Compare FY16 with FY17• Compare to current
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Serial petitions
FY ChallengesSerial
petition attempts
Attempt rate
Serial petition successes
Success rate
Metrics for analysis:
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Serial petitions
Challenges Serial petition attempts
Attempt rate
Serial petition successes
Success rate
FY16 1232 89 7% 46 52%
FY17 1160 86 7% 26 30%
FY20 938 21 2% 7 33%
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Serial petitions
• What made a successful serial petition in FY20?– Patent Owner (PO) asserts new claims in D.Ct (2).– PO does not contest adding one or two claims
(2).– Filing an IPR after CBM found ineligible and
merits not reached (3).
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Serial petitions
• Observations– Success rate dramatically dropped after General
Plastic.– Attempt rate dropped after success rate
dropped.– Serial petitions were successful when the scope
of D.Ct litigation is in flux, or to correct minor errors and omissions.
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Parallel petition: petitioner’s result
Inst Inst Inst
Inst Inst
Inst
Deny
Deny Deny
Deny Deny Deny
Filed <= 90 days apart
= Success
= Success
= Failure
= Failure
[order does not change result]
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Parallel petitions
• Comcast v. Rovi: mid-FY19• Trial Practice Guide update: late FY19• Compare FY18, FY19, FY20
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Parallel petitions
ChallengesParallel petition attempts
Attempt rate
Parallel petition
successes
Success rate
FY18 1178 182 15% 89 49%
FY19 1033 206 20% 112 54%
FY20 938 145 15% 43 30%
Note: The average number of petitions filed in a parallel petition attempt was 2.22 in FY18; 2.37 in FY19; and 2.28 in FY20.
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Parallel petitions
• What made a successful parallel petition in FY20?– Large number of claims/complex claim set (11)– Prior art eligibility/Antedation Issues (12)– PO did not contest (20)– PO asserted new claims in DCt (1)
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Parallel petitions
• Observations– Attempt and success rate has fallen.– Over 2/3 of parallel petitions were to cover non-
overlapping claim sets on the same art.– About 1/3 of parallel petitions were to cover
uncertain prior art status (e.g., antedation or prior art eligibility).
– If a parallel petition is granted, 90% of the time two petitions were instituted in total.
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Question/comment submission
• To send in questions or comments during the webinar, please email:– [email protected]
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